USPTO Patents Application 09912352

S&H Form: (2/01)

Attorney Docket No. 782.1100
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Patent Application of:
Christopher M. SCHMANDT, et al.

Application No.: 09/912,352 Group Art Unit: 2614

Confirmation No.: 5411

Filed: July 26, 2001 Exanniner: Gauthier, Gerald

For: Voice-based Message Sorting and Retrieval Method

RESPONSE TO NON COMPLIANT AMENDMENT

Commissioner for Patents
PC Box 1450

Alexandria, VA 22313-1450

This is a response to the Notice of Non-Compliant Amendment mailed on August 28,
2008, having a shortened period for response set to expire on September 29, 2008 (September
29, 2008 occurring on a Sunday).

In response to the Restriction Requirement mailed June 9, 2008, a Response was filed
on July 9, 2008. As pointed out by the Applicants in the response filed on July 9, 2008 regarding
the Restriction Requirement mailed June 9, 2008, the Examiner classified claims 31-35 as part
of Group I while classifying claim 36 as part of Group II (claims 31-35 depend from claim 36).

The Examiner issued a Non-Compliant Amendment on August 28, 2008 pointing out the
Examiner's own incorrect classification as pointed out by the Applicants in the response filed
July 9, 2008 (see, page 2 of attached Response filed on July 9, 2008). The Examiner's
issuance of this improper Response is taken as acknowledgement of the Examiner's improper
classification of claims 31-35 and 36 in different groups.

Applicants provisionally elect claims 1-36, 44-48, and 52-63 and again traverse the
Restriction Requirement (see, Response filed on July 9, 2008 a copy of which is enclosed).
Further, since claims 37-41 depend from claim 36, Applicants also elect claims 37-41 . Thus,
Applicants provisionally elect claims 1-41. 44-48, and 52-63 .

©2001 Staas & Halsey LLP

S&H Form: (2/01)

Application No.: 09/912,352

In order to avoid delay in prosecution, Applicants respectfully request that the Examiner
contact the undersigned if there are any formal matters remaining after this response.

If there are any additional fees associated with filing of this Amendment, please charge
the same to our Deposit Account No. 19-3935.

1201 New York Ave, N.W., 7th Floor
Washington, D.C. 20005 .
Telephone: (202)434-1500
Facsimile: (202)434-1501

©2001 Staas & Halsey LLP

Respectfully submitted

STAAS & HALSEY LLP

Temnit Afework /j
Registration No. 58,202

S&H Form: (2/01)

Attorney Docket No. 782,1 100
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Patent Application of:
Christopher M, SCHMANDT. et al.

Application No.: 09/912,352 . Group Art Unit: 2614

ConfirnDation No.: 5411

Filed: July 26, 2001 Examiner: Gauthier, Gerald

For: Voice-based Message Sorting and Retrieval Method

RESPONSE TO RESTRICTION REQUIREMENT

Commissioner for Patents
PC Box 1450

Alexandria, VA 22313-1450
Sir:

This is responsive to the Office Action mailed June 9, 2008, having a shortened period
for response set to expire on July 9, 2008, the following remarks are provided.

I. Provisional Election of Claims Pursuant to 37 CFR §1.142

Applicants provisionally elect claims 1-35, 44-48 and 52-63 (indicated as Group I) in the
Restriction Requirement dated June 9, 2008.

II. Applicants Traverse the Requirement

Insofar as Group II (claims 36-41 and 49-51) and Group III (claim 64) are concerned, it is
believed that claims 36-41 , 49-51 and 64 are so closely related to elected claims 1-35, 44-48
and 52-63 that they should remain in the same application. The elected claims 1-35, 44-48 and
52-63 directed to categorizing messages, for example, may be used for presenting newly-arrived
messages (claims 36-41 and 49-51) including where an addressee manages the sorting of the
messages (claim 64). There have been no references cited to show any necessity for requiring
restriction, and in fact, it is believed that the Examiner would find references containing the
asserted groups of claims in the same field of technology. Further, the Applicants respectfully
submit that evaluation of all claims would not provide an undue burden upon the Examiner at
this time in comparison with the additional expense and delay to the Applicants in having to

©2001 Slaas & Halsey LLP

S&H Form: (2/01)

Application No.: 09/912,352

protect the additional subject matter recited by tiie Group il and/or Group III claims by filing a
divisional application.

MPEP §803 sets forth the criteria for restriction between patentably distinct inventions.
(A) indicates that the inventions must be independent (see MPEP §802,01, §806,04, §808.01) or
distinct as claimed (see MPEP §806.05-806,05(1)); and (B) indicates that there must be a serious
burden on the Examiner if restriction is required (see MPEP §803.02, §806.04(a)- §806.04(1),
§808.01 (a) and §808.02). The Examiner has not set forth why there would be a serious burden
if restriction is required.

Further, the Examiner classifies claims 31-35 as part of Group I while classifying claim 36
as part of Group II. However, in the Amendment submitted on July 16, 2007, claims 31-35 were
amended to depend from claim 36. Thus, it is respectfully submitted that the Restriction
Requirement is erroneous.

III. Conclusion

Upon review of references involved in this field of technology, when considering that
elected claims 1-35, 44-48 and 52-63, claims 36-41, 49-51 and claim 64 are respectively
directed to categorizing, sorting and retrieval of messages, and when all of the other various
facts are taken into consideration, it is believed that all of the pending claims should be
examined in the subject application.

Respectfully submitted,
STAAS^W^LSEY LLP

Date: 0^/oi/2.i?€g By: yfe^n/yd^ (^^/./^^^

Temnit Afework 'n
Registration No. 58?^202

1201 New York Ave, N.W., 7th Floor
Washington, D.C. 20005
Telephone: (202)434-1500
Facsimile: (202)434-1501

©2001 Staas&HalseylLP